1. ) LEUNG KAI FOOK MEDICAL CO. PTE LTD 2. ) LEUNG KAI FOOK MEDICAL SDN BHD v NINSO GLOBAL SDN. BHD. (Dahulunya dikenali sebagai “TCT Home Centre (Sarawak) Sdn Bhd)

Case Significance

Illustrates the structured assessment of damages for the infringement of a well-known trademark, including an account of profits, loss of goodwill, general and exemplary damages, and additional damages under section 56(8) of the Trademarks Act 2019 for flagrant infringement.

This High Court decision concerns the assessment of damages following a judgment for trademark infringement and passing off, and illustrates the several heads of relief available to the owner of a well-known mark. Liability had already been established in favour of the plaintiffs, the common-law owners and registered proprietors of well-known medicated-oil trademarks, and had been affirmed on appeal, so that the defendant's liability was final and conclusive. The plaintiffs proceeded to an assessment of damages, electing an account of profits in respect of the defendant's infringing sales, and also advancing claims for loss of goodwill and reputation, additional damages, general damages, and exemplary damages. The Court assessed each head. It ordered an account of profits reflecting the profits made on the infringing sales. For the intangible harm to the plaintiffs' marks, it awarded a substantial sum for loss of goodwill and reputation, recognising the dilution of distinctiveness and the erosion of consumer confidence. It awarded additional damages for a counterfeit mark under section 56(8) of the Trademarks Act 2019, having regard to the flagrancy of the infringement, the benefit accrued to the defendant and the need to punish and deter. It awarded general damages for business disruption, the diversion of management time and inconvenience, and exemplary damages, assessed at a proportion of the compensatory award, to reflect deliberate and egregious conduct and to serve a punitive and deterrent purpose. The Court entered judgment for the total of these sums, with interest and costs. The judgment is significant for its structured treatment of the several heads of damages, including additional damages under section 56(8) of the Trademarks Act 2019, available for the infringement of a well-known mark. The decision is a valuable worked example of how the several heads of relief for trademark infringement fit together, and of the role of additional and exemplary damages in marking the court's disapproval of flagrant and deliberate infringement of a well-known mark.